be in danger, consult a trade mark expert for advice. If you
start using your mark again before anyone tries to revoke it,
it is likely you can avoid the risk of revocation (at least for
another three years).
P l a n n i n g o n g l o b a l d o m i n a t i o n ? A New
Zealand trade mark registration only protects your mark
in New Zealand. If you plan to export overseas, it is worth
checking to see whether you will be free to use the same mark
in your other countries of interest – and ideally, register your
mark overseas. You can either file separate applications in
each country one at a time, or file an international application
through what is known as the Madrid system, designating all
of the countries you want to obtain registration in. A Madrid
application can be a significant cost at the outset but it can
reduce downstream expenses and make maintaining your
trade mark registrations more efficient. Since every country
has different trade mark laws, it is worth consulting an expert
before filing overseas trade mark applications.
What does your registration protect?
There is a difference between registering a brand name, and
registering your business’ logo. A trade mark registered in
plain block letters, with no stylisation or pictorial elements,
gives you protection over those letters or words in whatever
font or colour you may use. In contrast, protecting a logo
or stylised word mark gives you protection for the visual
elements of that mark. There are benefits in both. To achieve
maximum protection, it is best to register your word mark in
plain text and register your distinctive visual logo separately.
can register any “sign” that is capable of distinguishing one
trader’s goods or services from those of other traders. This
includes three-dimensional shapes (like a bottle or distinctive
packaging), as well as sounds, colours, animations and even
smells. These non-traditional trade marks can be difficult to
register.
D e f e n d y o u r p a t c h . If you become aware of
someone else using a trade mark that is the same or very
similar to yours, in connection with goods or services like
yours, seek help from a trade mark lawyer – or if you feel
confident, write to the interloper yourself. If you don’t assert
your trade mark rights and instead allow others to use your
trade mark, you may find it difficult to stop them later on.
This will dilute your brand and could confuse consumers.
Someone else may even be able to register their mark
alongside yours, by proving “honest concurrent use”. A
carefully-worded letter alerting them to your trade mark can
often nip the problem in the bud.
What else can you register as a trade mark?
A trade mark doesn’t have to be a word or a picture. You
Written by Damian Broadley & Stacey Wood from AJ Park
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